Apple Inc.v.Summit 6, LLC

Patent Trial and Appeal Board

Jun 12, 2015

10961720 (P.T.A.B. Jun. 12, 2015)

Trials@uspto.gov Paper 17
571-272-7822 Date Entered: June 12, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC. and TWITTER, INC.,
Petitioner,

v.

SUMMIT 6, LLC,
Patent Owner.
____________

Case IPR2015-00685
Patent 7,765,482 B2
____________

Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and
KERRY BEGLEY, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

JUDGMENT
Termination Pursuant to Settlement
37 C.F.R. §§ 42.5, 42.71, 42.73, 42.74

On June 10, 2015, Petitioner (Apple, Inc. and Twitter, Inc.) and Patent
Owner Summit 6 LLC (“Summit 6”) filed a Joint Motion to Terminate.
Paper 15. Along with the motion, the parties filed a copy of their Settlement
Agreements, made in connection with the termination of this case, in
accordance with 37 C.F.R. § 42.74(b). Exs. 1030 & 1031. The parties also
IPR2015-00685
Patent 7,765,482 B2

2

submitted a Joint Request That Settlement Agreements Be Treated as
Business Confidential Information and Kept Separate Under 37 C.F.R.
§ 42.74(c). Paper 16. For the reasons set forth below, the Joint Motion to
Terminate and the Joint Request are granted.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
2012); see 37 C.F.R. § 42.72. In their Joint Motion to Terminate, the parties
indicate that the Settlement Agreements resolve all disputes between them
involving the patent-at-issue in this case, U.S. Patent No. 7,765,482 B2 (“the
’482 patent”). See Paper 15 at 2. This case is in its initial phase. Summit 6
filed a Preliminary Response on May 19, 2015, less than one month before
the parties filed their joint Motion to Terminate. Paper 10. The Board has
not determined whether to institute inter partes review pursuant to 35 U.S.C.
§ 314. Upon consideration of the facts before us, we determine that it is
appropriate to terminate this case and enter judgment, without rendering
either a decision to institute inter partes review or a final written decision.
See 37 C.F.R. §§ 42.5(a), 42.71(a), 42.73(a), 42.74. We, therefore, grant the
Joint Motion to Terminate. Paper 15.
We also determine that the parties have complied with the
requirements of 37 C.F.R. § 42.74(c) to have the Settlement Agreement
treated as business confidential information and kept separate from the files
of the ’482 patent. Thus, we grant the Joint Request That Settlement
Agreements Be Treated as Business Confidential Information and Kept
Separate Under 37 C.F.R. § 42.74(c). Paper 16.
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Patent 7,765,482 B2

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In addition, given the termination of the case as a result of the parties’
settlement, we also dismiss as moot the pending Motion to Seal, filed by
Summit 6. Paper 14. The subject papers of the Motion to Seal,
Exhibits 2001, 2002, 2020, 2021, and 2033, are expunged from the record.

ORDER
For the foregoing reasons, it is:
ORDERED that the Joint Request that Settlement Agreements Be
Treated as Business Confidential Information and Kept Separate Under
37 C.F.R. § 42.74(c) (Paper 16) is granted;
FURTHER ORDERED that Summit 6’s Motion to Seal (Paper 14) is
dismissed as moot;
FURTHER ORDERED that Exhibits 2001, 2002, 2020, 2021, and
2033 are expunged; and
FURTHER ORDERED that the Joint Motion to Terminate (Paper 15)
is granted and this case is hereby terminated.
IPR2015-00685
Patent 7,765,482 B2

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For Petitioner:
Jason Eisenberg
Shouvik Biswas
STERNE, KESSLER, GOLDSTEIN & FOX
Jasone-ptab@skgf.com
sbiswas-PTAB@skgf.com

For Patent Owner:

Peter J. Ayers
John Shumaker
Brian Mangum
LEE & HAYES, PLLC
peter@leehayes.com
jshumaker@leehayes.com
brianm@leehayes.com